Nominet UK Dispute Resolution Service

DRS Number 3312

Black Market Merchandising Limited -v- Shango Limited

Decision of Independent Expert

1.	Parties

Complainant:	Black Market Merchandising Limited	
Country:	GB	  

Respondent:	Shango Limited
Country:	GB

2.	Domain Name

blackmarket.co.uk (“the Domain Name”)

3.	Procedural Background

23 January 2006: 	Complaint lodged with Nominet electronically	
23 January 2006:	Hardcopy complaint received by Nominet	
24 January 2006:	Nominet forwarded complaint to Respondent	
20 February 2006	No response received by Nominet	

On 15 March 2006 I, Adam Taylor, the undersigned, confirmed to Nominet that I knew of no reason why I could not properly accept the invitation to act as expert in this case and further confirmed that I knew of no matters that ought to be drawn to the attention of the parties which might appear to call into question my independence and/or impartiality.

4.	Outstanding Formal/Procedural Issues (if any)

None.

5.	The Facts

The following is a chronological statement of the facts insofar as I have been able to divine them from the complaint and exhibits:

1984: Rene Gelston started operating “Rare Groove” music events on Friday nights at London’s Wag Club under the name “Black Market”.  This continued for many years.

1987: Rene Gelston opened a record shop called “Black Market Records” in London’s Soho. At around the same time he started a record label called “Black Market”. 

30 May 1990: Black Market Group Limited was incorporated. It is controlled by Rene Gelston.

11 June 1990: Black Market Group Limited registered UK trade mark no. 1432845 for the words BLACK MARKET in classes 9 and 25.

6 December 1990: The Complainant was incorporated. The Complainant is also controlled by Rene Gelston. 

1990 / 1991: Rene Gelston / the Complainant sold the Black Market Records shop to the Respondent. The Respondent is owned and controlled by David Piccione and Nicholas Anderson-Gilden. 

18 January 1991: Rene Gelston entered into a licence agreement with David Piccione and Nicholas Anderson-Gilden concerning use of name “Blackmarket Records”.

26 October 1994: The 1991 licence was superceded by a new agreement between Black Market Group Limited and Rene Gelston on the one hand and the Respondent, David Piccione and Nicholas Anderson-Gilden on the other. The former granted an exclusive licence to the latter to use the name “Blackmarket Records” (and associated logos): (1) as the name of the shop; and (2) to sell merchandising items bearing that name and to advertise such merchandise and the products sold in the shop. The licence was for 10 years. When the term ended, all rights were to revert to the licensor and the licensee had to stop using the name “Blackmarket Records” except to sell off existing merchandise. Nicholas Anderson-Gilden was expressly permitted to continue to use the name “Nicki Blackmarket” in connection with activities as a DJ.

16 March 1995: The Respondent registered the Domain Name.

30 September 1998: Black Market Group Limited assigned UK trade mark no. 1432845 to the Complainant.

7 November 2004: Rene Gelston emailed David Piccioni to say that the licence would expire in November 2004 and that he was not prepared to grant a new licence.

2005: The Complainant has produced an undated printout of the homepage of the website at the Domain Name. The copyright notice says “© Black Market Music 2005” at the top of the page there is a “bm” logo, beneath which are the words: “bm soho, Formerly Black Market Records”. On the right of the page there is the heading “About Black Market” and text which is partially cut off but which starts “Black Market is the most notorious … Based in London since 1986 … been at the forefront of all genres …”

26 September 2005: A solicitor’s letter on behalf of the Complainant and Rene Gelston was sent to the Respondent alleging trade mark infringement and passing off based on an alleged association between “BM” and “Black Market Records” on the website at the Domain Name and continuing use of a “Blackmarket Records” logo in the shop and on merchandise.

19 January 2006: An email was sent from an email address “@blackmarket.co.uk” addressed to “all website owners / webmasters with links to blackmarket.co.uk”. The subject line stated “Black Market Records now trading as BM Soho – Important Info – please read”. The email recites the change of name, gives the new website as “www.bm-soho.com” and says: “Traffic is currently being re-directed to the new address but this will be switched off in the near future.”   

24 January 2006: The home page of the website at the Domain Name (printout supplied by Nominet) was branded with a “bm” logo and the words “bm soho”. A notice stated “We have changed our address. We are now bm-soho.com. Please bookmark this address.” There is then a hyperlink entitled “Click here to enter the site” which takes users to the website at bm-soho.com. 

6.	The Parties’ Contentions

Complainant

The Respondent was merely a licensee. It no longer has the right to use the name “Black Market” or the related domain name. The Respondent is still clearly passing off after the license term has expired. 

The Respondent changed its domain name to “BM-Soho”. BM is disputable as it stands for “Black Market”. This is clearly passing off as this prefix is also used by the record label.

In November 2005, one year after the licence expired, the Respondent was still selling “Black Market” clothing in its store. This has clearly confused the general public. The Respondent’s website has images on the home page of Black Market products (record players) and references to “Black Market” in all the staff profiles. 

Respondent

There was no response.

7.	Discussion and Findings:

General

To succeed, the Complainant has to prove in accordance with paragraph 2 of the DRS Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the DRS Policy) in respect of a name or mark identical or similar to the Domain Name and, second, that the Domain Name, in the hands of the Respondent, is an abusive registration (as defined in paragraph 1 of the DRS Policy).

Both the Complainant and Black Market Group Limited are controlled by Rene Gelston. I see no reason to distinguish between any of these three entities and in this decision I will treat all three interchangeably.

Complainant’s Rights

The Complainant has rights in the name “Black Market” based on its registered trade mark for those words. 

The Complainant also has common law rights in the name “Black Market” based on its use for a range of music-related businesses since 1984. 

I conclude that the Complainant has established rights in respect of a name or mark identical to the Domain Name.

Abusive Registration

Is the Domain Name an abusive registration in the hands of the Respondent? Paragraph 1 of the DRS Policy defines “abusive registration” as a domain name which either:-

“ i.         was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR

   ii.       has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.”

Albeit that its licence from the Complainant was for the name “Blackmarket Records” and not purely “Black Market” or “Blackmarket”, the Respondent clearly had a legitimate reason to register the Domain Name in 1995. The Complainant has not objected to Respondent’s registration of the Domain Name or its use in connection with the shop during the period of the licence. So the Domain Name was not an abusive registration at the time when it was acquired.

The issue here is whether, following termination of the licence in November 2004, the Respondent used the Domain Name abusively.

The fact that the Respondent thereafter changed its trading name to “BM Soho” and its website to “www.bm-soho.com” suggests that the Respondent considered – whether rightly or wrongly – that it did not have any right to continue using either the name “Black Market” or the Domain Name in connection with its business. Certainly the Respondent has not appeared in this case to claim that it was so entitled or that it in fact had some other genuine reason to use the Domain Name eg in connection with the name “Nicki Blackmarket” (not that I would necessary have accepted such an assertion). 

Nonetheless, the Respondent continued to use the name “Black Market” on the website at the Domain Name in a way which in my view was intended to mislead internet users into thinking that its business was (still) connected with the Complainant or its trade mark. This is evident in particular from the heading “About Black Market” and subsequent text (although partly cut off). I do not believe that the Respondent’s right under the licence agreement to sell off existing stocks of merchandise would have necessitated such text on the website. 

I do not consider that the use of the wording “Formerly Black Market Records” after the “bm soho” sufficed to distinguish the Respondent from the Complainant or its trade mark; on the contrary this perpetuated the connection.            

The change of website notice plus link on the 24 January 2006 version of the website operated to funnel internet users to the Respondent’s new site but did nothing to separate the Respondent from the Complainant or its trade mark. 

In my view the manner in which the Respondent used the Domain Name after the end of the licence agreement took unfair advantage of the Complainant’s trade mark and the Domain Name is therefore an abusive registration. (This conclusion is based solely on the Respondent’s use of the Domain Name and not on the alleged activities occurring in the shop itself.)  

8.	Decision

The domain name blackmarket.co.uk should be transferred to the Complainant.

            Adam Taylor                                                                  
Date